A Guide to Outlining Office Actions

If you aren’t familiar with the patent application process, an “Office action” is, basically, a letter from the USPTO (U.S. Patent and Trademark Office) informing an applicant about the status of their pending patent application. Often it means that the patent application has been rejected. (Don’t panic if you get one of these – many, if not most, patents issued from patent applications that were initially rejected.)

A common task for patent prosecutors is to evaluate and, if appropriate, prepare a response to an Office action. The patent regulations require that the response “must reply to every ground of objection and rejection in the prior Office action.” (37 C.F.R. 111(b)) However, despite good intentions, occasionally a practitioner will, for one reason or another, fail to address every ground of objection and rejection. Perhaps they are too focused on an obviousness rejection, and forget about that minor specification objection. While it’s not necessarily a fatal error, it is an error that can be avoided with the use of a good outline.

[As an aside, if you are curious about what happens if you submit an incomplete response to an Office action, see MPEP 714.03.]

So it’s a good idea to get into the habit of outlining an Office action as a first step in its evaluation. A good outline can serve as a checklist later on, when you’re ready to file a response, to make sure that you’ve addressed everything. In addition, your outline can provide you with an summary that you can reference when explaining the Office action to your client. Also, if you receive a subsequent Office action, you can compare outlines to quickly see whether you’ve made any progress, or if the same rejections have been repeated.

Using a fictitious example, here’s how I usually go about outlining my Office actions. (Scroll to the bottom to see the completed outline)

First, at the top of the page, I write the docket number and then outline the claims:

In this example, claims 1, 6, 12, and 13 are independent claims. The commas “point” to dependent claims. So, for example, claims 2, 4, and 5 depend from claim 1; claim 3 depends from claim 2; and so on.

Next, I write the Office action type and date:

Here, NFOA stands for Non-Final Office Action. Alternatively, I might use FOA for Final Office Action or RR for Restriction Requirement. If you are a new practitioner or don’t do much prosecution work, it’s not a bad idea to write the response deadline out to the side as well.

Finally, I list the objections and rejections in the order they appear in the Office action:

Each item in the list includes the subject portions of the application, then the type of objection/rejection, and then notes about the basis of the objection/rejection. Some of the shorthand I use includes ivo = in view of; fivo = further in view of; Obj = objection; 102 = anticipation rejection under 35 USC 102; 103 = obviousness rejection under 35 USC 103; a.i.r.i.i.f. = allowable if re-written in independent form.

At this point, it’s a good idea to count the claims in the list to make sure that all claims are present and accounted-for. The eagle-eyed practitioner will notice that claim 10 is missing in this example. Time to go back and look for it in the Office action to see if you missed it or if the Examiner failed to address it. This highlights another advantage of outlining – it allows you to catch these types of issues early-on when they can best be addressed.

Here’s what the completed outline sheet looks like after a couple of Office actions:

After outlining the second Office action, you can compare the two Office actions and easily see that you overcame some objections, and you made some progress with some claims, while other claims remain rejected.

There’s nothing special about this format. Feel free to use it or change it to meet your needs. The key is that it’s complete and easy for you to understand. If it meets that criteria, it will serve as a useful tool to help you catch mistakes and get a quick overview of the progress of the patent application.

Do you have a different method of outlining or tracking your application’s progress? Tell me about it in the comments!